HORLICKS LIMITED Vs. UTTAM SADHUKAN

JUDGEMENT

(1.) In this suit for permanent injunction restraining infringement of trade mark and copy right, passing off, damages, delivery up etc., a decree is sought restraining the defendant, his servants, agents and representatives from : (i) manufacturing, selling and offering for sale, advertising, directly or indirectly, dealing in chocolates, sweets, confectionery or other related goods under the trade mark 'Horlicks' or mark 'Horlieks' or under any other mark which may be deceptively similar to the plaintiffs' trade mark 'Horlicks'; (ii) re-producing, printing or publishing any label or packaging which is a colourable imitation or substantial reproduction of plaintiffs' 'Horlicks' packaging; (iii) manufacturing and selling and offering for sale confectionery or any other goods under the trade mark 'Horlicks' or 'Horlieks' or any other mark deceptively similar to plaintiffs trade mark 'Horlicks', get up with a lay out, colour scheme and arrangement of features that resemble the plaintiffs 'Horlicks' product packaging in any manner whatsoever or doing any other thing so as to cause confusion or deception amounting to passing off of the goods and business of the defendant as and for those of the plaintiffs; (iv) delivery up of all the goods, dies, blocks, wrappers etc. bearing the impugned mark and labels; (v) rendition of accounts of profits earned by the defendant on account of misrepresentation of their goods under the impugned marks, and for damages on account of use of impugned mark 'Horlicks'/ 'Horlieks'.

(2.) Plaintiff No. 1, namely, M/s. Horlicks Limited is engaged in the business of manufacture of wide range of energy boosting food products, malted biscuits, toffees etc. and is the proprietor of the trade mark 'Horlicks' in respect of the said goods. Plaintiff No. 3, namely, M/s. Smithkline Beecham Consumer Healthcare Limited manufactures and markets products under the trade mark 'Horlicks' in India with the express authorisation of plaintiff No. 2, namely, M/s. Smithkline Beecham Asia Pvt. Limited, who is the licensee of the said trade mark under licence agreement dated 3 February 1997 executed in their favour by plaintiff No. 1, which permits plaintiff No. 2 to authorise use of the trade mark upon the "contract products". It is claimed that plaintiffs launched their business in India under the said trade mark in the year 1943 and have thereafter spent substantial amounts on the advertisement of the products under the said trade mark. As a result of extensive sales promotion and advertising compaigns carried out by them, the trade mark 'Horlicks' has become an extremely well known brand in India and is singularly identifiable with the plaintiffs. It is claimed that the total marketing and promotional expenditure in respect of 'Horlicks' range of products since 1992 exceeds Rs. 50 crores. The stand of the plaintiffs is that by virtue of their prior adoption, user and registration of the trade mark 'Horlicks' and long continuous and extensive user thereof in India in respect of food products, their trade mark has attained a valuable goodwill and substantial reputation is attached thereto. It is also claimed that plaintiff No. 3 is the owner of copyright to the artistic work in the 'Horlicks' label.

(3.) It is averred that in the month of August 1998, during the course of investigation commissioned by the plaintiffs against another party, the plaintiff's came to know that the defendant had adopted the trade mark 'Horlicks' and its look alike label "Horlieks" for marketing his products. It is alleged that the defendant's wrappers with a mark 'Horlieks' and 'Horlicks' are identical to the plaintiffs' trade mark 'Horlicks' and, therefore, amount to infringement of the registration in their favour. It is also pleaded that defendant's adoption of plaintiffs' distinct 'Horlicks' label also amounts to infringement of copy right of plaintiff No. 3. The plaintiff companies have thus filed the present suit for injunction, passing off, infringement of copy right, etc.